Ex Parte Stewart et alDownload PDFPatent Trial and Appeal BoardFeb 5, 201613077242 (P.T.A.B. Feb. 5, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/077,242 03/31/2011 102383 7590 02/09/2016 Trellis IP Law Group/ Sony Corp, 1900 Embarcadero Road, Suite 109 Palo Alto, CA 94303 FIRST NAMED INVENTOR Russell Stewart UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 020699-106800US 5223 EXAMINER SHIBRU, HELEN ART UNIT PAPER NUMBER 2484 NOTIFICATION DATE DELIVERY MODE 02/09/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): docket@trellislaw.com megan@trellislaw.com sherry@trellislaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RUSSELL STEW ART and TIMUR INSEPOV Appeal2014-001661 Application 13/077 ,242 1 Technology Center 2400 Before THU A. DANG, CARLL. SILVERMAN, and NORMAN H. BEAMER, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-20. Final Act. 4. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. STATEMENT OF THE CASE The invention relates to controlling distribution of media content to authorized users. Abstract. 11 The real party in interest is identified as Sony DADC US Inc. App. Br. 3. Appeal2014-001661 Application 13/077,242 Claim 1, reproduced below, is exemplary of the subject matter on appeal: 1. A method of controlling distribution of content to a viewer, the method comprising: sending authentication instructions from a server to a disc player having a disc inserted therein, wherein the disc comprises media content without a plurality of files that are required by the disc player for playback of the media content; determining if the disc in the disc player is valid by comparing information received from the disc player against information stored in a database; receiving viewer verification information from the disc player to determine if the viewer is authorized to view the playback of the media content on the disc; sending an error indication if the disc is determined to be invalid and/ or the viewer is determined to be unauthorized; and sending the plurality of files that are required for the playback of the media content from the server to the disc player if the viewer is authorized and the disc is valid. App. Br. 21 (Claims Appendix). THE REJECTIONS Claims 1-20 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Kutaragi et al. (US PG PUB 2008/0098118 Al; published Apr. 24, 2008). Final Act. 4. 2 Appeal2014-001661 Application 13/077,242 ANALYSIS Appellants and the Examiner dispute whether Kutaragi discloses the claim 1 limitation: sending the2 plurality of files that are required for the playback of the media content from the server to the disc player if the viewer is authorized and the disc is valid. App. Br. 11-16; Final Act. 5; Ans. 8-10. The Examiner finds Kutaragi Figures 4 and 5, steps 113 and 209 respectively, disclose the disputed limitation. Final Act. 5. As described in the Figure 4 accompanying text, upon verification, a "read-permitted command is received" and the entertainment apparatus and step 113 executes the program stored in the CD-ROM. Kutaragi i-fi-173, 74. Similarly, as described in the Figure 5 accompanying text, upon verification, step 209 transmits a "program execution permission command" to the entertainment apparatus. Kutaragi i-fi-175, 80, 86. Appellants argue: [regarding step 113 of Figure 4], A permission command, authorizing the user to read content already present on the disc, is not equivalent to a plurality of files required for playback of the media content from the server to the disc player, as the claims require. So neither sending nor receiving such a read permission command satisfies the corresponding claim limitations. App. Br. 13. 2 Antecedent basis for this limitation is recited in the prior limitation "wherein the disc comprises media content without a plurality of files that are required by the disc player for playback of the media content." 3 Appeal2014-001661 Application 13/077,242 Similarly, step 209 of Figure 5, also cited by the Examiner, is . merely the transmission of a "program execution permission command" from the server to the authenticated device containing the authenticated disc. Sending a permission command to allow a program already present on the disc to be executed is not equivalent to sending a plurality of files required for playback of the media content from the server to the disc player, as the claims require. App. Br. 14. We are persuaded by Appellants' arguments that Kutaragi steps 113 and 209 do not disclose the disputed limitation as required for anticipation. In particular, Kutaragi does not disclose "sending ... files that are required for playback of the media content from the server ... " We are also persuaded by Appellants' argument that, while the Examiner finds Kutaragi discloses transmission of status information and requested data, "data corresponding to the disk to the computer," and the information to be sent is "not limited," the Examiner does not show Kutaragi discloses the disputed limitation as required for anticipation. App. Br. 15; Final Act. 2-3 (citing i-fi-f 18, 24, 118, 119, 102, Abstract); Ans. 9-10. A claim is anticipated only if each and every element as set forth in the claims is found, either expressly or inherently described in a single prior art reference, and arranged as required by the claim. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). The Examiner's findings of dictionary definitions for the terms "data," "file," "command," and "information" and applications of these definitions to statements made by Appellants and Kutaragi citations do not cure the deficiency that Kutaragi does not disclose the disputed limitation. Ans. 8- 10. 4 Appeal2014-001661 Application 13/077,242 In view of the above, we do not sustain the rejection of claim 1, and independent claims 9, 15, and 18 as these claims recite substantially the same limitation discussed above. App. Br. 16. We also do not sustain the rejection of dependent claims 2-8, 10-14, 16, 17, 19, and 20. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious. "). DECISION We reverse the Examiner's decision rejecting claims 1-20. REVERSED 5 Copy with citationCopy as parenthetical citation